Proposed Amendments to ACTA

Unlike the July 2010 text, the August 2010 text no longer contains the provisions on secondary liability for internet service providers over violations committed by third parties utilizing their services. However, if Article 2.X.2 remains in the final text, secondary liability for internet service providers may still be enforceable.

Border officials will inevitably be “educated” and provided with information about suspect shipments by those who may have a vested interest in keeping out parallel imports and may even have an interest in causing serious inconvenience to a legitimate competitor.

Footnote 34 reflects a general principle that anticicumvention provisions should not be used to shift the fundamental balance that copyright strikes between authors and users. Not only should the existing rights, limitations, and exceptions present in copyright be preserved despite any anticircumvention provisions, but those provisions should also not be read to create obligations upon anyone wishing to display or interact with works.

In Article 2.11, parties are required, without exception, to provide "competent authorities with the authority to order the destruction of goods" found to be infringing in Article 2.10. Or, where "such goods are not destroyed, each Party shall ensure such goods are disposed of outside the channels of commerce," except in "exceptional circumstances." If the scope of the board members extends to all intellectual property rights, this runs counter to Article 37 of the TRIPS, concerning semi-conductor designs. As regards copyrighted or trademarked goods, it violates a number of statutes in Finland, Italy, Sweden, Germany, Denmark and the United States.

In Article 60 of the TRIPS, members may exclude "small quantities of goods of a non-commercial nature" in a "traveler's personal luggage or sent in small consignments". In ACTA, this possible exclusion is limited to such goods "contained in a travelers' personal luggage." It is unclear what happened to the TRIPS exception for small non-commercial consignments, which appear to be neither in nor out of ACTA.

By requiring the judicial authorities to consider "any legitimate measure of value submitted by the right holder," including specifically "the suggested retail price," this Article in ACTA would be contrary to national statutes that provide for different standards, such as limits on damages to reasonable royalties.

As currently drafted, ACTA does not require the merits of the alleged violations to be investigated and verified before measures may be implemented and enforced. The provision merely states that procedures “shall be fair and equitable”. As a term of art, the phrase “fair and equitable” only sets aspirational goals and principles and does not set concrete rights and obligations of the parties involved.

The scope of the agreement is yet to be determined under Art. 2.X.5. To maintain a uniform and equitable scope of protection throughout the agreement, this section must be limited to counterfeit trademark goods and pirated copyright goods and not extend to “any act of infringement of intellectual property rights”. It is important to cross out “remedies which constitute a deterrent to further infringements” in order avoid abuse of remedies as a punitive measure.

The current ACTA text shows inadequate concern for the due process rights of those alleged to be in contravention of counterfeiting or copyright piracy laws. These provisions are modeled on the due process provisions of 19 U.S.C. Sec. 1337, which U.S. border officials use to authorize the seizure of goods suspected of being counterfeit.